Anyone working with trademarks will come across the spectrum of distinctiveness. This chromatic-sounding concept will be critical in any effort to register and protect brands and understanding how it works will make it easier to choose a brand name that can get the maximum possible trademark protection.
The trademark spectrum of distinctiveness gives us a tool with which to create strong brands. Image from rawpixel.com.
The Spectrum of Distinctiveness
Every trademark will fall somewhere on the spectrum of distinctiveness.
At one end of the spectrum, a trademark can be “descriptive,” and at the other end of the spectrum, a trademark can be “arbitrary.” Arbitrary trademarks are typically the stronger ones. Arbitrary trademarks include well-known marks like Apple, Xerox, Nike, etc.
On the other hand, trademarks on the descriptive end of the spectrum of distinctiveness might have difficulty getting registered. A descriptive mark would be something that describes the good or service offered; for instance, using the trademark “Beer” for beer would be descriptive and thus have a hard time getting registered.
The spectrum of distinctiveness as a handy set of bullet points, from stronger to weaker:
- Arbitrary or fanciful marks are distinctive. They strongly identify an underlying offering. The law gives arbitrary or fanciful trademarks the highest degree of protection. Think “Kodak,” “Apple,” “Nike” – all strong brands, and secure for a reason.
- A suggestive mark evokes or suggests a characteristic of the underlying good. Consumers need the imagination to associate the word with the underlying product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive, and the law provides a high degree of protection. “Coppertone” would be an example of a suggestive mark as it suggests qualities of the product.
- A descriptive mark describes, rather than suggests, a quality of the underlying product (e.g., color, function, or ingredients). They tell us something about the product. Something like “All Bran” or “Vision Center” would be examples of descriptive marks. Descriptive trademarks can get trademark protection, but the process is more complicated and takes longer.
- A generic mark is a mark that is simply the name of the good or service offered. For instance, “beer” would not work as a trademark for beer.
Choosing A Mark On The Spectrum of Distinctiveness
I often advise clients to select a trademark that is as arbitrary as they can make it. Whether the USPTO deems a trademark descriptive or arbitrary often relates to what trademark class the application has been filed in.
If a mark is deemed too descriptive or even generic, the Trademark Office may refuse to register the mark (the refusal comes in the form of an Office Action). While a trademark attorney may be able to argue that a descriptive mark is suggestive and thus be able to secure registration, the process is not always cheap and not consistently successful.
Avoid hassle and expense by choosing an arbitrary mark instead of a descriptive mark.
Trademark Spectrum of Distinctiveness and Intent to Use Applications
Trademarks deemed descriptive can’t complete registration as an intent to use trademark application. For a descriptive trademark to make it onto the supplemental trademark register, the mark must be in use. That means showing a trademark specimen to prove usage.
